Ex Parte Martin et al

Patent Trial and Appeal Board

May 13, 2016

12813584 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/813,584 06/11/2010
75931 7590
Basch & Nickerson LLP
1751 Penfield Road
Penfield, NY 14526
08/12/2016
FIRST NAMED INVENTOR
Nathaniel G. Martin
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
20082039-US-NP 7290
EXAMINER
NGUYEN, ANH-VINH THI
ART UNIT PAPER NUMBER
2673
NOTIFICATION DATE DELIVERY MODE
08/12/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@bnpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHANIEL G. MARTIN and PAUL R. AUSTIN
Appeal2014-006047
Application 12/813,584
Technology Center 2600
Before JOHNNY A. KUMAR, MELISSA A. RAAP ALA, and
KAMRAN JIVANI, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing ("Request") under 37 C.F.R.
§ 41.52(a)(l) for reconsideration of our Decision on Appeal mailed May 17,
2016 ("Decision"). The Decision affirmed the Examiner's rejections of all
claims 1-13 on appeal.
We have reconsidered our Decision, in light of Appellants' arguments
in the Request, and are not persuaded that we misapprehended or overlooked
any points in rendering our Decision. We decline to change or modify our
prior Decision for the reasons discussed infra.
Appeal2014-006047
Application 12/813,584
In the Request (2--4), Appellants present the following contentions:
(A) [T]he Board clearly recognized that Barber et al. fails to teach
expressly the claim limitation of electronically analyzing
individual colors and individual characters, but merely teaches
the analyzing of OCR markings.
Request 2.
(B) [E]ven though the Board may have reasonably argued that
analyzing OCR markings is a subset of analyzing individual
colors and individual characters, such a characterization
demonstrates that Barber et al. fails to teach electronically
analyzing individual colors and individual characters .
. . . [A]ccording to MPEP §806.04(d), the claim limitation of
analyzing of individual colors and individual characters would
not be characterized as a genus with respect to the teachings of
Barber et al. ...
Id. at 3 and 5.
Contention A
Claim 1 recites:
A method for extracting identification information from a
container to facilitate the storing and indexing of electronic
images produced from scanning documents contained in the
container, comprising:
scanning, using a scanner, a portion of the container to
generate an electronic image thereof;
electronically analyzing individual colors and individual
characters within a predetermined area of the electronic image
to identifj; the individual colors within the analyzed
predetermined area of the electronic image and to identifj; the
individual characters within the analyzed predetermined area of
the electronic image;
electronically identifying, based upon the identified colors
and characters, index information for the container;
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Appeal2014-006047
Application 12/813,584
scanning, using a scanner, the documents within the
container to generate image data;
electronically labeling the image data in accordance with
the index information for the container; and
storing, in a data storage device, the image data at a
location within the data storage device, associated with the index
information for the container.
(We have emphasized the contested limitation.)
Regarding contention A, Appellants contend that our Decision (page
5) recognized that Barber fails to teach the claim limitation of electronically
analyzing individual colors and individual characters, as set forth in
independent claims 1 and 8 (Request 2). Appellants mischaracterize our
Decision, as in fact, our Decision states that Barber does teach this
limitation. See Dec. 5---6.
The Examiner relied on Barber to teach the contested limitation (Ans.
11 ), finding that Barber teaches that the claimed labels would also include an
OCR marking; representative of its respective numeral and color. We
agreed.
As stated in our Decision (page 5) the claim limitation does not
specify the method of electronic identification of individual colors and
characters. An electronic analysis of an individual character would also
comprise identifying its individual color because Barber teaches a numeral
may be represented by its respective color and vice versa (Ans. 9 and 11; see
Barber col. 4, 11. 37--40).
Therefore, we remain unpersuaded of error in the Examiner's broader
reading of the contested limitation to comprise an electronic OCR marking
or bar code analysis of individual colors and characters. "[A ]pplicants may
amend claims to narrow their scope, a broad construction during prosecution
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Appeal2014-006047
Application 12/813,584
creates no unfairness to the applicant or patentee." In re IC01V Health and
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
Appellants could have amended the claim to state that each alphanumeric
character is analyzed separately from the color.
Therefore, we maintain our previous Decision ( 4--5) that Barber
teaches the contested limitation. We observe that our Decision also agreed
with the Examiner that Grady alternatively teaches the disputed limitation.
See Dec. 6. Accordingly, we decline to modify our decision in response to
Appellants' contention A.
Contention B
Regarding contention B, Appellants assert that our Decision is contrary
to the genus/species relationship stated in the MPEP § 806.04 (d) (Request 4).
We stated in our Decision:
We agree with the Examiner that analyzing the OCR marking to
determine the numeral (character) and color is identifying the
individual characters and individual colors as claimed. (See Ans.
13.) ... Furthermore, analyzing the OCR markings to determine
the individual characters and individual color is analyzing the
colors and characters.
Decision 5.
In stating that "analyzing the OCR markings is a subset of the claimed
'electronically analyzing individual colors and characters,"' our Decision
emphasizes that there is more than one way to electronically analyze these
elements, such as through the use of bar codes or through the use of a
separate color and number detection mechanism. Id. In other words,
because analyzing characters through the use of OCR markings or bar codes
also comprises analyzing the color, as noted supra, it becomes a type of (A-
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Appeal2014-006047
Application 12/813,584
analyzing characters)+ (B-analyzing colors) instead of only (A) as
Appellants allege (Request 3).
Therefore, as noted in our Decision ( 5), the species of a particular
method of electronically analyzing characters and colors through the use of
bar codes, teaches the genus of the general method of electronically analyzing
as claimed. Thus, our Decision is consistent with the MPEP § 806.04 (d).
Accordingly, we decline to modify our decision in response to
Appellants' contention B.
CONCLUSION
We have considered all the arguments raised by Appellants in the
Request, but Appellants have not persuaded us that we misapprehended or
overlooked any points in rendering our Decision. For the reasons detailed
above, we decline to change or modify our prior Decision.
DECISION
We have granted Appellants' Request to the extent that we have
reconsidered our Decision, but we deny the Request with respect to making
any changes therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REHEARING DENIED
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